Monday, August 8, 2016

Uncontested Removal of Co-Inventor

Novartis AG v Canada (Attorney General) 2016 FC 229 McDonald J

In this decision, decided in February but only recently released, McDonald J granted an uncontested application by Novartis to delete one of the named co-inventors on the ‘650 patent. The decision states that the application was made “pursuant to sections 31(3) and 52” of the Act [1]. This is a bit odd as was established in Micromass 2006 FC 117 that s 31(3) applies only prior to grant, and after grant, as in this case, s 52 is appropriate: accordingly, the judgment itself was made “pursuant to section 52" of the Act. The application also proceeded on the basis that the test to be met for removal of an co-inventor is that set out under s 31(3), which requires affidavits from the remaining applicant or applicants satisfying the Commissioner that they are the sole inventor or inventors [6]. At the time the application was made, there were some cases suggesting that in deciding whether to remove a co-inventor under s 52, the court should follow the test set out for the Commissioner of Patents in s 31(3) (see here). That view would also explain why the application was brought pursuant to both sections. Subsequently, however, in Qualcomm 2016 FC 499 (blogged here) Simpson J has held that such affidavits are not strictly required under s 52. The decisions are not inconsistent in the result, since the affidavits were provided in this case and the application was granted, and no doubt it was simpler for Novartis to provide those affidavits rather than argue the point, as the law was unsettled at the time of its application.

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